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Protecting Your Perfume's IP

This article was first published by Esprit magazine.

You launch a new perfume. Its sales outdo all expectations. Then you receive a call from your marketing team. They've come across a rival perfume. It's got a similar (but not identical) name, packaging which mirrors yours and is being advertised as a 'smell-alike' version of your perfume. What can you do? How do you avoid a similar situation for your next perfume?

For all perfumes, the key to their identity is their smell. In theory, smells are protectable as trade marks, but the stumbling block for obtaining a registration is that trade marks must be represented visually. Various attempts to visually represent smells have all been refused.

A perfume's recipe can be protected by the law of confidence. There are certain requirements for information to be protectable as 'confidential information' but, assuming these are met, you can prevent third parties (e.g. ex-employees) from disclosing/using your recipe. However, not if they reverse engineer your perfume, without knowing the recipe.

If the perfume is created in a new, inventive way, you may be able to register a patent for the invention. Patents are difficult (and expensive) to obtain. There are also strict requirements about disclosure, so the invention should be kept secret until the patent application has been filed.

The names of perfumes (and of perfume companies) can be registered as trade marks, provided no-one else has rights in the same/a similar name and the name meets certain conditions, for example that it is not purely descriptive of the product (e.g. the words "rose perfume" couldn't be registered). Logos, product labels and slogans are also, prima facie, registrable as trade marks. Specialist searches can be conducted to check for earlier rights which might be able to stop you using or registering a new name, logo or product label.

The benefit of obtaining a registered trade mark is that it gives you a monopoly right in the mark. You can rely on it to stop others using and registering the same (or a similar mark) for the same (or similar) goods. Assuming it is renewed and you continue to use it, the registration can, in theory, last forever. The oldest UK registered trade mark for perfume dates back to 1877.

Even for descriptive marks, if you use them for long enough and in such a way that customers come to see them as your trade mark, they can be registered. For example, Proctor & Gamble have registered the advertising slogan "the make-up of make-up artists", by proving that when customers see the slogan they know that the products on sale come from one specific business.

It is sometimes possible to register the shapes of perfume bottles as trade marks. A trade mark office will usually only register the shape if it is unusual within the industry and customers will regard the shape 'as a trade mark'. You will often have to prove that customers have been educated through your marketing initiatives to see the shape as part of your brand identity. That is not easy.

It is also possible to register designs to protect the appearance (or part) of a product's packaging and its product label. Certain requirements have to be met. For example, in the EU the design must be new and have 'individual character'. Registered designs are monopoly rights and can prevent another company from using the same (or a very similar) design. Unlike trade marks, there is no requirement to prove that customers are likely to be confused about which company is selling the perfume. For this reason, they can be useful for stopping 'lookalike' products.

In addition, in the EU there are also unregistered designs. These rights arise automatically, but do not create the same monopoly rights as a registered design (you have to prove copying took place) and they only last for a limited period (sometimes only 3 years).

Copyright will most likely subsist automatically (without the need to register) in respect of the advertising materials you use to promote your perfume. If these are copied then a copyright infringement claim can be brought.

Finally, within the EU, there are legal provisions that prevent unfair comparative advertising. If someone advertises their perfume as (explicitly or implicitly) an imitation or replica of yours (and for which you have a registered trade mark that has a reputation), this will be considered as taking 'unfair advantage' of your trade mark. This legal right can be used to stop other companies using marketing materials that state that their perfume "smells like" your perfume.

So, to come back to the original questions, if you've got your intellectual property rights in place before you launch a new perfume, it's much easier to stop other people taking advantage of your creativity and hard work.  Without them, you face an uphill battle.